Wednesday, November 10, 2010

According the N.Y. Post, Hallmark Greeting Cards has settled a lawsuit with Paris Hilton after she sued Hallmark for releasing a card using her trademarked phrase “that’s hot.”

Paris Hilton is a celebrity known for her lifestyle as a flamboyant heiress and her role in the reality TV program “The Simple Life.” The series placed her and fellow heiress Nicole Ritchie in situations where their privileged upbringing may not have prepared them for ordinary tasks that working class folks regularly perform. In many episodes Hilton stated “that’s hot,” whenever she found something out of the ordinary or humorous. She registered the phrase as a trademark in 2007 with the United States Patent & Trademark Office.

Later that year, Hallmark released a card parodying Hilton’s “First Day as a Waitress” that used the phrase. Hilton claimed that the card’s depiction copied too closely a scene that she made famous on her television series. The card juxtaposes a female face with a cartoon drawing of a waitress’s body, with the composite woman performing the tasks of a waitress and saying Hilton’s trademark phrase. Hilton herself wore a waitress’s uniform, served customers, and said, “That’s hot,” in an episode of “The Simple Life.” However, Hilton did not claim that the card
literally depicted her.

Hilton filed suit asserting three causes of action, misappropriation of publicity under California common law; false designation under the Lanham Act; and infringement of a federally registered trademark. Hallmark moved to strike Hilton’s right of publicity claim under California’s anti-SLAPP statute. “SLAPP” stands for “strategic lawsuit against public participation. It is a law designed to stop attempts to chill a person from exercising their First Amendment rights on a matter of public interest by forcing them to incur the expense and bother to defend against a meritless and abusive lawsuit. In other words, sometimes plaintiffs file lawsuits against defendants without merit just to shut them up and intimidate them. Such suits can stifle a defendant from speaking out, especially if the plaintiff is a well-heeled company and the defendant an ordinary citizen without the means to hire lawyers to defend his/her rights. The lower court denied Hallmark’s motion to strike under California’s anti-SLAPP statute.

Hilton’s claim was for misappropriation of the common law right of publicity. The elements of the claim under California law are “(1) the defendant’s use of the plaintiff ’s identity; (2) the appropriation of plaintiff ’s name or likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury.” Hallmark did not dispute that Hilton meets these requirements. Hallmark, however, claimed two affirmative defenses under California law, both based on the First Amendment: the “transformative use” defense and the “public interest” defense.

Under California law, “when an artist is faced with a right of publicity challenge to his or her work, he or she may raise an affirmative defense that the work is protected under the First Amendment because it contains significant transformative elements or that the value of the work does not derive primarily from the celebrity’s fame.”

In regard to the public interest defense, California law holds that “no cause of action will lie for the publication of matters in the public interest, which rests on the right of the public to know and the freedom of the press to tell it.” This defense did not help Hallmark, because it only precludes liability for “the publication of matters in the public interest.” The birthday card did not publish or report such information.

The case went up to the Ninth Circuit Court of Appeals, with Hallmark claiming its First Amendment right to free speech insulated it from liability. The appeals court rejected Hallmark’s appeal, however, and the suit was scheduled to go to trial as early as December if the parties had not settled. The court did not find that Hilton was entitled to a judgment as a matter of law, only that there was at some probability of her prevailing on the merits if it went to trial, and so it would not be dismissed.

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About Me

A veteran entertainment lawyer, arbitrator, expert witness and author, Mark Litwak has provided legal services or acted as a producer rep on more than 100 feature films. He is the author of 6 books including: Reel Power, Dealmaking in the Film and Television Industry (winner of the 1995 Kraszna-Krausz Book Award), Contracts for the Film and Television Industry, and Risky Business: Financing and Distributing Independent Film. He is also the author of the popular CD-ROM Movie Magic Contracts.
As a law professor, he currently teaches at the U.S.C. School of Law, and has previously taught at the Univ. of Puget Sound and Loyola Law Schools. He has been on the faculty at UCLA for 24 years. He has lectured for the American, California and Texas bar associations. A frequent speaker, he has lectured at many universities including Harvard, the American Film Institute, Columbia University and NYU. He has also presented movie industry seminars in England, Australia, South Africa and Canada.
Mark Litwak is AV®
Peer Review Rated by Martindale-Hubble and has been named a Superlawyer multiple times by the publishers of Law and Politics Magazine.